On September 26, 2014 a Federal Circuit majority panel held that the inventor responsible for a number of GPS patents asserted against American Honda Motor Co. intentionally withheld information about prior art from the patent office. American Calcar, Inc. v. American Honda Motor Co., Inc., Fed. Cir., No. 2013-1061, 9/26/2014. Applying the en bancdecision in Therasense, Inc. v. Becton, the Federal Circuit found that the inventor’s actions amounted to inequitable conduct.

In its en banc Therasense decision, the Federal Circuit stated that the law of inequitable conduct as applied to nondisclosure requires two distinct elements: specific intent to deceive and materiality. Under Therasense, if the PTO would not have allowed a claim had it been aware of the undisclosed prior art, that prior art is considered “but-for” material.

The court made several findings of fact including that in August 1996, one of the inventors had borrowed a vehicle with the technology in question and spent between “30 minutes to an hour” in the car operating the GPS navigation system. The inventor never informed his attorney of the experience. In addition, an operator’s manual had been in possession of the inventor, yet had not been submitted.

The court found that omission of the items satisfied both the specific intent and materiality prongs, though a dissenting opinion from Judge Newman argued that the materiality decision did not take into account a conflicting decision by the PTO.